Erie Rubber Co. v. American Dunlop Tire Co.

• Decision Date: 22 July 1895
• Docket Number: 20.
• Citation: 70 F. 58
• Parties: ERIE RUBBER CO. v. AMERICAN DUNLOP TIRE CO.
• Court: U.S. Court of Appeals — Third Circuit

70 F. 58

ERIE RUBBER CO. v. AMERICAN DUNLOP TIRE CO.

No. 20.

United States Court of Appeals, Third Circuit.

July 22, 1895

Horace Pettit, John K. Hallock, and H. C. Lord, for appellant.

P. W Page and S. A. Duncan, for appellee.

Before ACHESON and DALLAS, Circuit Judge, and WALES, District Judge.

WALES District Judge.

This is a suit for the infringement of the first claim of letters patent No. 488,494, dated December 20, 1892, and issued to Alexander T. Brown and George F. Stillman, for an improvement in inflatable or pneumatic wheel tires for cycles and other vehicles. The American Dunlop Tire Company, the complainant by virtue of certain mesne assignments, became the owner of the patent, and obtained an interlocutory decree in the circuit court against the Erie Rubber Company, the defendant which has brought this appeal.

The specification of the patent declares that:

'The primary object of the invention is to provide a tire which, while possessing the resiliency and life of what are technically known as true or high-grade pneumatics, may be readily and easily detached from, or applied to, the rim of a wheel.'

The chief characteristics of the improvement are described to be:

'First, an exteriorally grooved rim, with divergent side edges or flanges; and, second, a tire comprising or confining an inflatable tube, seated and contained partly within the grooved rim, and made rigid or nonextensible circumferentially along two lines on opposite sides, which lie within the groove, below the edges, but above the bottom or deepest part of the same.'

'In the practical carrying out of our invention, we secure the best results by attaching to or incorporating with the tire two metallic wires or bands, endless or having connected ends, and combining such a tire with a peripherally grooved rim, having in each divergent side or flange, and above the bottom or deepest part of the groove, a supplemental groove, or an offset or shoulder, up, into, or onto which the wires or bands are forced by the air pressure when the tire is inflated, and where they are seated and retained by that pressure. A tire thus constructed requires no permanent connection of any description between it and the rim, as the internal air pressure alone is amply sufficient to maintain it in position thereon. It further obviates the use of tightening appliances, or accessories other than those required for inflation, or any manipulation of the same, in the operation of applying the tire to, or removing it from, the rim.'

The accompanying figure, representing a cross section of the patented combination, and reproduced from the drawings of the patent, illustrates the invention in the preferred form, as above described.

B is the inner tube; C, the outer cover, with wires, 2, 2, in its edges; A, the rim; and 1, 1, the supplemental grooves or shoulders.

(Image Omitted) The first claim reads thus:

'(1) In combination with an exteriorally grooved rim, having divergent side edges or flanges, a tire comprising or confining an inflatable tube, seated and contained partly within the grooved rim, and made rigid or inextensible circumferentially along two lines lying within the groove, below the edges, but above the deepest part of the same, by means of circumferential reinforcements secured to or incorporated with it, and adapted to be held in place in the rim by the action of the internal air pressure.'

The alleged infringing device is manufactured and sold by the defendant under a license from Joseph G. Moomey, to whom letters patent No. 513,617, dated January 30, 1894, were issued for improvements in pneumatic tires, the specification whereof states:

'More specifically, my invention has relation to the fastening of the tire to the rim of the wheel, and particularly to that class of tires having flaps on their peripheries, on which a binder is placed, binding them to the rim of the wheel.'

The Moomey tire is shown in the following drawing, representing a transverse section:

(Image Omitted)

In this cut, 1 marks the rim; 2, the tire; 3, a string or cord binder wrapped several times around the wheel, and binding the tire firmly upon the rim; 4, the inflatable tube.

The defenses are (1) that the first claim is invalid, or, if valid, can have no scope beyond the structure shown in the drawings, and described in the original specification; and (2) noninfringement.

By reference to the file wrapper and contents, it appears that the original application of Brown and Stillman, filed June 20, 1891, was for the invention of new and useful improvements in tires for vehicles, of which the specification, 'taken in connection with the accompanying drawings, is a full, clear, and exact description. ' The specification further states, 'Our invention consists of the several novel features of construction and operation hereinafter described, and which are specifically set forth in the claims hereto annexed. ' The claims for the supplemental grooves, when first made, were rejected by the examiner, on the ground that the prior patents of Harris and DuBois 'show solid tires held in place on the rim by the lateral shoulders and wires, and is the same means as employed by applicant. ' The first specification and claims having been canceled entire, others were substituted by the applicants, which, however, retained the 'auxiliary, concaved flanges,' and these substitutions were also amended on additional objections from the examiner. On the third amendment two claims were added, for 'the combination with the rim, having side cavities, of a flexible tire,' etc. The fourth amendment was for a 'wheel rim having a central, peripheral groove, and a supplemental groove, of increased diameter, at each side of the said central groove, in combination with a pneumatic tire having its expansible tube disposed in said central groove, and a wire annulus secured to each edge of the tire casing, and disposed in said supplemental grooves in the manner described.'

It is conceded that this device was novel, and entitled to the protection of a patent, but it will be observed that the patent is for a combination; and to support the charge of infringement, against the defendant, it must be shown that it has made use substantially of the same combination, including every one of the elements thereof, or a mechanical equivalent for any one that has been omitted. It will also be noticed that the defendant does not use the supplemental grooves, and it is admitted that if those grooves are, constructively or by implication, included in the first claim, there is no infringement. On this point the issue between the parties is distinctly made. The complainant contends that the first claim covers a rim without the supplemental grooves; and the defendant insists that this construction would extend the claim beyond the scope of the original application and in opposition to the express limitation contained in the correspondence of the applicants with the patent office, and render it invalid. The original application of Brown and Stillman was for a tire in combination with a wheel having a grooved rim with supplemental grooves, and the accompanying drawings illustrate a rim of that description, and no other. The specification and claims underwent several modifications and amendments on references to other patents; but the drawings remained unchanged, nor was any claim made or intimation given that...